Before 35 U.S.C. § 299 was enacted, some minority district courts had permitted
joinder of independent defendants only because they infringe the same patents. That
gave a great incentive to non-practicing entities to sue as many defendants as possible
in one suit. To resolve this problem, Congress created § 299(b) to abrogate the
minority view of joinder. The Federal Circuit in In re EMC Corp. also created a test
requiring finding of “an actual link between the facts underlying each claim of
infringement.” The Federal Circuit provides six EMC factors for lower courts to
determine permissive joinder. The Eastern District of Texas relies primarily on “the
use of identically sourced parts” to find joiner, while other district courts have denied
joinder of direct competitors. Particularly, in mobile phone technology cases, the
Eastern District of Texas has permitted joinder only because the same hardware
component is used, while other courts may find misjoinder only because mobile
devices of one manufacturer’s operational system are not the same as mobile devices
of another manufacturer’s operational system.
Relation:
Fifth Annual Internet Law Work-in-Progress Conference, Santa Clara University, March 7, Santa Clara University School of Law